On October 17, 2014, Justice Arnold of the Chancery Division of the High Court, England and Wales, ruled that trademark proprietors can obtain court orders obliging Internet Service Providers (ISPs) to block websites whose operators are committing trademark infringement by advertising and selling counterfeit goods online. Cartier, Montblanc and Richemont v. BSkyB, BT, TalkTalk, EE and Virgin (Open Rights Group intervening)  EWHC 3354 (Ch).
The three claimants joined in the proceedings were related; Cartier, Montblanc and Richemont are all subsidiaries of the well-known Swiss luxury goods company, Compagnie Financière Richemont SA (Richemont). The five defendants were all ISPs. Richemont had previously contacted the ISPs and protested against certain websites infringing its trademarks by advertising and selling fake goods. The ISPs countered by saying that Richemont did not take enough action itself to get the websites shut down and that preventing access would negatively affect legitimate users.
Justice Arnold held that the operators of the websites were infringing claimants’ trademarks by placing advertisements and offers for sale on the Internet, which were targeting UK consumers. He also ruled that “the ISPs have an essential role in these infringements, since it is via the ISPs’ services that the advertisements and offers for sale are communicated to 95% of broadband users in the UK.” With regard to the claim that legitimate users would be negatively affected by ISPs having to block access, Justice Arnold made it clear that the entitlement of Internet users to receive information did not cover participation in trademark infringement and that if the orders are properly executed, with adequate safeguards built in, legitimate users should not be affected.
Justice Arnold stated that he would “make orders substantially in the form sought by Richemont”; however, he wanted the orders to incorporate the following additional safeguards:
- Future orders should expressly permit affected subscribers to apply to the Court to discharge or vary the orders—which would ensure the protection of users’ rights.
- The page of the blocked website should identify which parties obtained the order—which would mean that affected users would have the right to apply to the Court to discharge or vary the order.
- The order should contain a “sunset clause” so that it would cease to have effect at the end of a defined period unless either the ISPs consent to the orders being continued or the Court orders that they should be continued—which would enable the practical operation of the orders to be reviewed in the light of experience.
This is a truly groundbreaking decision. Never before has a European ISP provider been forced to block or impede access to websites that infringe a proprietor’s trademarks by advertising or selling counterfeit goods online. The ramifications of this ruling for ISPs, unscrupulous website operators and trademark proprietors will no doubt stretch far beyond the borders of the United Kingdom and will echo loudly throughout the rest of Europe. It is highly likely that other European judiciaries will follow suit.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2014 International Trademark Association